Thursday, May 10, 2007

Who's proving what in obviousness after KSR?

Further to the who's proving what in obviousness, thefireofgenius suggests that a test comprising

[a] If the pertinent prior art contains all the elements in the claim serving their prior art functions, the examiner should make an initial rejection of the claim. [b] At this point, the burden of production and persuasion would shift to the applicant to overcome the presumptive obviousness of the claim. [c] The only evidence the Patent Office should accept in rebuttal is clear proof that the prior art expressly taught away from making the combination in the claim under review, or that identifiable others had tried and failed to solve the problem the applicant has successfully solved.

is close to exactly what the KSR Court requires through its demand for “caution in granting a patent based on the combination of elements found in the prior art.

IPBiz notes that the Supreme Court found three errors in the CAFC analysis:

#1. The Circuit first erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve.

#2. Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem.

#3. Third, the court erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try.

The Supreme Court did not say that it was all right for a prima facie case of obviousness to comprise ONLY a mosaic of references. The Supreme Court did not shift the burden of production and persuasion, although it certainly made the challenger's burden easier.

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I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.